Japan: Intellectual Property Country Comparative Legal Guides Japan: Intellectual Property Country Author: Nishimura & Asahi Hiroshi Suga, Hitomi Iwase, Kaedeko Takagi, Partner Partner Associate [email protected] h_iwase@jurists. o.jp co.jp This country-specific Q&A provides an overview to intellectual property law in Japan. It will cover intellectual property rights, licensing, enforcement, establishing infringement or liability, and challenges to intellectual property. This Q&A is part of the global guide to Intellectual Property. For a full list of jurisdictional Q&As visit http://www.inhouselawyer.co.uk/index.php/practice-areas/intellectual-property/ © The In-House Lawyer 2017 | 1 Japan: Intellectual Property 1. What different types of intellectual property rights exist in this jurisdiction to protect? (a) Inventions (e.g. patents, supplementary protection certificates, rights in confidential information and/or know-how); Patents, including utility model rights Japan has a two-tier patent system: The Patent Act, which covers exclusive rights to inventions based on technical ideas using natural laws; and The Utility Model Act, which covers exclusive rights to devices based on technical ideas using natural laws in connection with a device’s shape, structure, or a combination thereof. The scope of the subject matter protected by the Utility Model Act is narrower than that protected by the Patent Act, and the level of technical complexity required by the Utility Model Act is lower than that required by the Patent Act. Trade secrets and confidential information Confidential information, which is defined as technical or business information useful for commercial activities, such as manufacturing or marketing methods, that is kept secret and is not publicly known, can be protected under the Unfair Competition Prevention Act as trade secrets. (b) Brands (e.g. trade marks, cause of action in passing off, rights to prevent unfair competition, association marks, certification marks, hallmarks, designations of origin, geographical indications, traditional speciality guarantees); Trade marks Any mark that consists of a character, figure, sign, three-dimensional shape, colour, or any combination thereof, or a sound, that is used in connection with goods or services for commercial purposes can be registered and protected under the Trademark Act. If unregistered marks are widely-recognised or well-known, they can be protected under the Unfair Competition Prevention Act and/or the Civil Code. (c) Other creations, technology and proprietary interests (e.g. copyright, design rights, semiconductor topography rights, plant varieties, database rights, rights in confidential information and/or know-how). Copyright Under the Copyright Act, copyright arises automatically upon creation of a work in © The In-House Lawyer 2017 | 2 Japan: Intellectual Property which thoughts or sentiments are expressed in a creative way and which falls in the literary, academic, artistic or musical domain. Design rights Under the Design Act, a “design” means the shape, pattern, colour, or combination thereof of an article which has an aesthetic sense. A graphic image that is provided for use in the operation of an article (limited to operations carried out in order to enable the article to perform its functions) and is displayed on the article itself or another article that is used with the article in an integrated manner, can also be protected by the Design Act. Unregistered designs can be protected under the Unfair Competition Prevention Act and/or the Copyright Act. 2. What is the duration of each of these intellectual property rights? What procedures exist to extend the life of registered rights in appropriate circumstances? Patents (including utility model rights) A patent is effective upon registration and expires 20 years from the application filing date. In the fields of pharmaceuticals and agrochemicals, the patent term can be extended by a period not exceeding 5 years. A utility model right is effective upon registration and expires 10 years from the application filing date. Registered Trademarks Protection under the Trademark Act arises upon registration and lasts for 10 years. Registrations can be renewed any number of times by filing a renewal application and paying a fee. Copyright Copyright protection starts from the creation of a work and continues for 50 years following the death of the author (for a cinematographic work, 70 years from publication). Design rights Protection under the Design Act arises upon registration and lasts for 20 years. © The In-House Lawyer 2017 | 3 Japan: Intellectual Property Who is the first owner of each of these intellectual property rights © The In-House Lawyer 2017 | 4 Japan: Intellectual Property 3. and is this different for rights created in the course of employment or under a commission? Previously, for patents, utility model rights and design rights, the right to obtain the intellectual property rights created by an employee in the course of employment was held by the employee without exception, and the employer only had a non-exclusive licence of the right. However, the Patent Act, the Utility Model Act and the Design Act (amended in May 2015) have made it possible for employers to reserve, from the outset, the right to obtain the IP rights in employee inventions if they so provide in employment contracts, work rules, or any other stipulations in advance. Copyright in a work created by an employee in the course of employment vests in the employer unless otherwise stipulated by contract, work rules, or similar instruments. 4. Which of the intellectual property rights described in questions 1-3 are registered? Patent rights, utility model rights, trademarks under the Trademark Act and design rights are protected through registration with the Japan Patent Office (the JPO). 5. Who can apply for registration of these intellectual property rights and, briefly, what is the procedure for registration? Patents (including utility model rights) In principle, an inventor, or someone who was assigned the right to obtain a patent from the inventor, can apply for registration. To obtain a patent, an applicant needs to make a request for examination with the JPO within 3 years from the filing date. Registered Trademarks A person who conducts, or is planning to conduct, business in connection with the designated goods or services can apply for registration. Design rights A person who creates a design that is industrially applicable, or someone who was assigned the right to obtain a patent from such person, can apply for registration. 6. How long does the registration procedure usually take? The average application procedure length in 2014 is as follows: © The In-House Lawyer 2017 | 5 Japan: Intellectual Property Patents (including utility model rights) 15.2 months from a request for examination to an issue of rights. Registered Trademarks 6 months from filing to an issue of rights. Design rights 7.1 months from filing to an issue of rights. 7. Do third parties have the right to take part in or comment on the registration process? During the application process for patents, utility model rights or trademarks, any person can anonymously provide information to oppose an application before the JPO. 8. What (if any) steps can the applicant take if registration is refused? An applicant for patents, trademarks or design rights may file a request for a trial with the JPO against the examiner's decision of refusal, within 3 months from the date when the transcript of the examiner's decision has been served. 9. What are the current application and renewal fees for each of these intellectual property rights? See “Schedule of fees” at www.jpo.go.jp. 10. What are the consequences of a failure to pay any renewal fees and what (if any) steps can be taken to remedy a failure to pay renewal fees? In the case of a failure to pay renewal fees, registered rights shall be deemed to have been extinguished. Remedies are available, such as a limited extension of the payment period. 11. What are the requirements to assign ownership of each of the intellectual property rights described in questions 1-3? For Patents (including utility model rights), registered trademarks and design rights, © The In-House Lawyer 2017 | 6 Japan: Intellectual Property registration with the JPO is required; for copyrights, trade secrets and confidential information, no registration or other formality is required. Note that, to assert a copyright assignment against a third party, registration with the Agency for Cultural Affairs is required. 12. Is there a requirement to register an assignment of any of these intellectual property rights and, if so, what is the consequence of failing to register? In the case of failing to register an assignment of patents, utility model rights, registered trademarks or design rights, the assignment does not take effect. 13. What are the requirements to licence a third party to use each of the intellectual property rights described in questions 1-3? In principle, licences require no formalities. However, in the case of certain types of exclusive licenses, i.e., exclusive licences to use the rights (senyo- jisshi-ken or senyo- shiyo-ken) for patents, utility model rights, trade marks and design rights, registration with the JPO is required for the license to take effect. 14. Is there a requirement to register a licence of any of these intellectual property rights and, if so, what is the consequence of failing to register? See 13. In the case of certain types of exclusive licenses, if a license is not registered, such exclusiveness of the license does not take effect. 15. Are exclusive and non-exclusive licensees given different rights in respect of the enforcement of the licensed IP, and if so, how do those rights differ? Exclusive licensees (licensee of senyo- jisshi-ken or senyo-shiyo-ken, see 13) of patents, utility model rights, trade marks and design rights can seek an injunction against, or an award of damages from, the infringer (within the scope of the license), while in principle, other types of licensees cannot seek an injunction or damages.